iRobot Corporation v. Su xiaoying / xiaoying su
Claim Number: FA1305001499376
Complainant is iRobot Corporation (“Complainant”), represented by Elizabeth A. Walker of Choate, Hall & Stewart LLP, Massachusetts, USA. Respondent is Su xiaoying / xiaoying su (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <china-roomba.com>, registered with BizCN.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 13, 2013; the National Arbitration Forum received payment on May 13, 2013. The Complaint was submitted in both Chinese and English.
On May 13, 2013, BizCN.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <china-roomba.com> domain name is registered with BizCN.com, Inc. and that Respondent is the current registrant of the name. BizCN.com, Inc. has verified that Respondent is bound by the BizCN.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 16, 2013, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of June 5, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@china-roomba.com. Also on May 16, 2013, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant
A. Complainant has been using the ROOMBA mark since at least September 2002. Complainant has sold millions of ROOMBA vacuum cleaning robots worldwide. Complainant alleges it has invested substantial sums to advertise and promote the ROOMBA products in a variety of media.
B. Complainant contends that it has rights in the ROOMBA mark, used in connection with vacuum cleaning robots. Complainant is the owner of registrations for the ROOMBA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,742,056 registered July 29, 2003). See Complainant’s Exhibit F. Complainant also owns a registration for the ROOMBA mark with the State Administration for Industry and Commerce of the Peoples’ Republic of China (“SIAC”) (Reg. No. 3,405,685 registered July 7, 2004). See Complainant’s Exhibit G.
C. The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <china-roomba.com> domain name contains the ROOMBA mark in its entirely, along with the generic geographic term “china.”
D. Respondent does not own any rights or have any legitimate interests in the <china-roomba.com> domain name.
a. Respondent has not been commonly known by the name ROOMBA or the <china-roomba.com> domain name. Complainant has not licensed or otherwise permitted Respondent to use the ROOMBA mark in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use.
i. The disputed domain name resolves to a website that has products for sale similar to those of Complainant’s products. The resolving website suggests it is a distributor for Xiamen Fast Cleaner. See Complainant’s Exhibit H.
ii. The resolving website contains a banner at the top of every page with the words “China-roomba.” Complainant believes this is a calculated effort to divert Complainant’s customers to Respondent’s <china-roomba.com> domain name.
E. Respondent registered and is using the <china-roomba.com> domain name in bad faith.
a. Respondent’s <china-roomba.com> domain name is disruptive to Complainant’s business by offering competing products on the resolving website, which likely to confuse and mislead consumers.
b. The disputed domain name resolves to a website that has products for sale similar to those of Complainant’s products. See Complainant’s Exhibit H. Such actions are evidence of Respondent’s intent to obtain commercial gain by creating a likelihood of confusion with Complainant’s mark.
c. Respondent had actual and constructive knowledge of Complainant’s well-known ROOMBA mark, which has been used by Complainant since at least September 2002.
Respondent
A. Respondent failed to submit a Response.
Complainant is iRobot Corporation which list its address as Bedford, MA, USA. Complainant is the owner of trademark registrations for its mark ROOMBA in the USA and abroad, including China. Complainant uses its mark on and in connection with the offering of goods and services for vacuum cleaning robots. The goods and services are offered in real space as well as over the internet at various sites owned by the Complainant including <irobot.com>, <irobotroomba.com>, <buyroomba.com>, and various other ROOMBA formative domains.
Respondent is Su xiaoying/xiaoying su who’s address is listed as Xiamen, Fujian (China). Respondent’s registrar’s address shares the same location. Respondent registered the <china-roomba.com> domain name on October 27, 2011.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant contends that it has rights in the ROOMBA mark, used in connection with vacuum cleaning robots. Complainant is the owner of registrations for the ROOMBA mark with the USPTO (e.g., Reg. No. 2,742,056 registered July 29, 2003). See Complainant’s Exhibit F. Complainant also owns a registration for the ROOMBA mark with the SIAC (Reg. No. 3,405,685 registered July 7, 2004). See Complainant’s Exhibit G. The Panel finds that Complainant has rights in the ROOMBA mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant asserts that Respondent’s <china-roomba.com> domain name contains the ROOMBA mark in its entirely, along with the generic geographic term “china.” The Panel notes that the disputed domain name includes a hyphen separating the geographic term “china” and the ROOMBA mark, along with adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of the generic geographic term “china” does not sufficiently differentiate the disputed domain name from Complainant’s mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”). The Panel also finds that the addition of a hyphen and the gTLD “.com” do not distinguish the domain name from the mark for Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel finds that Respondent’s <china-roomba.com> domain name is confusingly similar to Complainant’s ROOMBA mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant contends that Respondent does not own any rights or have any legitimate interests in the <china-roomba.com> domain name. Complainant urges that Respondent has not been commonly known by the name ROOMBA or the <china-roomba.com> domain name. Further, Complainant states it has not licensed or otherwise permitted Respondent to use the ROOMBA mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Su xiaoying” as the domain name registration. Panels have used the WHOIS information in determining whether Respondent is commonly known by the disputed domain name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Because the WHOIS information gives no indication that Respondent is commonly known by the disputed domain name and Complainant did not grant Respondent permission to use its ROOMBA mark, the Panel finds Respondent is not commonly known by the <china-roomba.com> domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant explains that the disputed domain name resolves to a website that has products for sale similar to those of Complainant’s products. Complainant provides evidence in the form of a screenshot showing the resolving website, which suggests Respondent is a distributor for “Xiamen Fast Cleaner.” See Complainant’s Exhibit H. Further, the Panel notes that the resolving website contains a banner at the top of every page with the words “China-roomba.” Complainant believes this is a calculated effort to divert Complainant’s customers to Respondent’s <china-roomba.com> domain name. The Panel finds that Respondent’s competing use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel also finds that Respondent’s incorporation of Complainant’s mark in the disputed domain name and the resolving website creates an improper inference that Respondent’s use of the disputed domain name is illegitimate. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use). The Panel finds that Respondent’s use of the <china-roomba.com> domain name to offer website visitors competing goods does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends in its Policy ¶ 4(a)(ii) section that Respondent’s <china-roomba.com> domain name is disruptive to Complainant’s business by offering competing products on the resolving website, which is likely to confuse and mislead consumers. Panels have found such conduct to constitute bad faith registration and use. DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) The Panel finds Respondent’s disruption of Complainant’s business by creating the implication of association with Complainant in order to offer substantially similar products to those sold by Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
Complainant alleges that the disputed domain name resolves to a website that has products for sale similar to those of Complainant’s products sold under the ROOMBA mark. See Complainant’s Exhibit H. Complainant urges that such actions are evidence of Respondent’s intent to obtain commercial gain by creating a likelihood of confusion with Complainant’s mark. Panels have found such conduct to be a bad faith registration and use. See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark). The Panel finds that Respondent intentionally attempted to take commercial advantage of Internet users’ mistakes and thus registered and uses the <china-roomba.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <china-roomba.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 26, 2013
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